We got the empire, now as then: Rogers precludes record label suit against Fox show

Twentieth Century
Fox Television v. Empire Distribution, Inc., No. 16-55577 (9th Cir. Nov. 16,
2017) 
“Empire
Distribution, founded in 2010, is a well-known and respected record label that
records and releases albums in the urban music genre.”  Then came Fox’s TV show Empire, “which
portrays a fictional hip hop music label named ‘Empire Enterprises’ that is
based in New York” and “features songs in every episode, including some
original music.” Columbia Records releases music from the show, and Fox
promotes the show and its music through live musical performances, radio play,
and consumer goods such as shirts and champagne glasses bearing the show’s “Empire”
brand.  Fox sought a declaratory judgment
of noninfringement and Empire counterclaimed for infringement and dilution. The
district court granted summary judgment to Fox, relying on Rogers v. Grimaldi, and the court of appeals affirmed.
Empire argued that
at least some of Fox’s uses weren’t part of expressive works and thus outside Rogers: Fox allegedly used the “Empire”
mark “as an umbrella brand to promote and sell music and other commercial
products.” The court of appeals found that these were only “technically”
outside the title or body of an expressive work: works protected by Rogers “may be advertised and marketed
by name.”  There was no reason to think
the TV show was a pretextual expressive work “meant only to disguise a business
profiting from another’s trademark”; Fox’s promotional activities, “including
those that generate revenue, are auxiliary to the television show and music releases,
which lie at the heart of its ‘Empire’ brand.”

A footnote in Rogers says that Rogers’ limiting construction of the Lanham
Act wouldn’t apply to titles that are confusingly similar to other titles,
because the public interest in sparing consumers this type of confusion
outweighs the slight public interest in permitting authors to use such titles.
But appellate courts haven’t cited this footnote, and even the Second Circuit
applied Rogers in the subsequent Cliffs Notes case involving conflicting
titles.  Any such exception might be “ill-advised
or unnecessary,” and was anyway inconsistent with Ninth Circuit precedent speaking
of Rogers as the test that applies
when expressive works are accused.
Applying Rogers: Empire argued that, in order for
Rogers to apply, the mark must have
attained a meaning beyond its source-identifying function.  [Which, not for nothing, “empire” does—it just
had that meaning before Empire entered the scene.] But that’s merely a
consideration—expressive uses often, but not always, occur “when a brand name
enters common parlance and comes to signify something more than the brand
itself,” and Rogers is broader. Then,
unfortunately, the court commented that “a mark that has no meaning beyond its
source-identifying function is more likelyto be used in a way that has ‘no artistic
relevance to the underlying work whatsoever,’ because the work may be “merely
borrow[ing] another’s property to get attention’” (citing Dr. Seuss Enters. v. Penguin Books, sigh)—which of course is
inconsistent; if the mark didn’t have some sort of meaning beyond source
identification, it wouldn’t make sense to use it to get attention for an
expressive work.
Here, Fox used the
common English word “Empire” for artistically relevant reasons: “the show’s
setting is New York, the Empire State, and its subject matter is a music and
entertainment conglomerate, ‘Empire Enterprises,’ which is itself a figurative
empire.”  Prong one was satisfied. There
was no additional requirement, as argued by Empire, that the junior work refer
to the senior mark. “A title may have artistic relevance by linking the work to
another mark, as with ‘Barbie Girl,’ or it may have artistic relevance by
supporting the themes and geographic setting of the work, as with Empire.”

The title wasn’t
explicitly misleading.  Empire Distribution
argued that the “relevant inquiry . . . is whether the defendant’s use of the
mark would confuse consumers as to the source, sponsorship or content of the
work.” But that’s the general likelihood-of-confusion test, which applies
outside the Rogers context of expressive works. Likely consumer confusion wasn’t
the key, but rather whether there was “an ‘explicit indication,’ ‘overt claim,’
or ‘explicit misstatement’ that caused such consumer confusion.” Fox’s Empire
show contained no overt claims or explicit references to Empire Distribution, and
thus wasn’t explicitly misleading; game over. 

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